Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1, 3-6, 11, 13-15, 19, and 20 have been amended. Claims 7 and 16 have been canceled. Claims 21-23 are added as new claims. Claims 1-6, 8-11, 13-15, and 17-23 are pending.
Response to Arguments
Applicant’s arguments, see pg. 2, filed 09/15/2025, with respect to the 35 U.S.C. 112(b) have been fully considered and are persuasive. The 35 U.S.C. 112(b) has been withdrawn.
Applicant's arguments filed 09/15/2025 regarding the 35 U.S.C. 101 rejection have been fully considered but they are not persuasive.
Applicant argues that the invention and claims do not recite a judicial exception, particularly certain methods of organizing human activity, because the invention rooted in computer technology. Applicant provides that the invention is rooted in computer technology because it addresses a problem of partitioned available physical spaces via a graphical user interface for further purchase or rent by other individuals, provides for flexibility and customization of how usable space can be made available for purchase or rent, and reducing inefficiency and lost value typically incurred when spaces are not rented out during downtime. Examiner disagrees. Addressing a problem of partitioned available spaces for further purchase or rent by other individuals, providing for flexibility and customization of how usable space can be made available for purchase or rent, and reducing inefficiency and lost value typically incurred when spaces are not rented out during downtime. The above-mentioned problems or issues are not problems rooted in computer technology, but are business problems directly corresponding to certain methods of organizing human activity (e.g., commercial interactions, managing personal interactions, behavior, or relationships). It appears that applicant is asserting that their claims are similar to DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1259 (Fed. Cir. 2014), but examiner disagrees. The court in DDR Holdings observed that the “claimed solution [was] necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, 773 F.3d at 1259. The claims in DDR Holdings addressed the problem of retaining website visitors, that if adhering to the routine, conventional functioning of the Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. The invention and claims of DDR were deemed patent eligible because, regardless of what abstract idea it may have been directed towards, it nonetheless represented a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” – it was not deemed patent eligible merely because it recited a computer-based solution in a particular field of industry. In the applicant’s invention thee claims merely recite a computer-based solution in a particular field of industry (renting out usable space), and as such, is not a problem necessarily rooted in computer technology, but merely represents a problem in a business process, business relation, and/or commercial interaction, which corresponds to certain methods of organizing human activity. The claims recite an abstract idea.
Applicant further argues that the claims do not recite the judicial exception grouping of certain methods of organizing human activity because “a human mind is not equipped to electronically store data associated with usable spaces, execute a partitioning module to partition the usable space into two or more partitioned spaces each having dimensions smaller than the usable space, electronically partition the usable space, display the partitioned sizes on a graphical user interface, and electronically list the partitioned sizes for further purchase or rent by other parties, because such processes require elements of computer technology to be performed and are therefore not merely an organization of human activity.” Examiner disagrees. Claims can recite a mental process even if they are claimed as being performed on a computer. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. in these situations, the claim is considered to recite a mental process. (see MPEP §2106.04 (a)(2)). In the applicant’s invention, the storing of the data, partitioning the usable space, displaying the partitioned sizes on a graphical user interface, and listing the partitioned sizes for further purchase or rent by other parties are concepts performed in the human mind and applicant is merely claiming the concepts performed via computer. The claims recite an abstract idea.
Applicant argues that claimed invention provides a technical solution for an improved partitioning of usable spaces by multiple parties for further purchase or rent by other parties, thereby providing "significantly more", the prior art not disclosing the claimed invention as discussed below provides a further indication that the claimed invention provides "significantly more", and that the claimed invention is directed to a technical improvement in the scheduling and management of physical sports and civic facilities, such as ice rinks, athletic fields, and multipurpose courts. Examiner disagrees. The claims do not recite an improvement in computers or technology, but at best, indicates an improvement in the judicial exception itself. “Improved partitioning of usable spaces by multiple parties for further purchase or rent by other parties” and “improvement in the scheduling and management of physical sports and civic facilities, such as ice rinks, athletic fields, and multipurpose courts” does not indicate an improvement in computers or technology, instead a computer is simply used in the business process of the scheduling and management. It is important to keep in mind that an improvement in the judicial exception itself (e.g., a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG LLC, the court determined that the claim simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. Similarly, the Applicant’s claim recitations are an improvement in the judicial exception, not an improvement in technology. Regarding the argument that “the prior art not disclosing the claimed invention as discussed below provides a further indication that the claimed invention provides ‘significantly more’”, this argument in invalid. Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. (see also MPEP §2106.05)
The 35 U.S.C. 101 rejection is maintained.
Applicant’s arguments, see pg. 14, filed 09/15/0255, with respect to 35 U.S.C. 103 have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of has been withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: partitioning module in claims 1, 14, 20, 22, and 23.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6, 8-11, 13-15, and 17-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. an abstract idea) without significantly more.
Claims 1-6, 8-11, 13, 21, and 22 recite a system (i.e. machine), claims 14, 15, 17-19, and 23 recite a method (i.e. process), and claim 20 recite non-transitory computer-readable medium (i.e. machine or article of manufacture). Therefore claims 1-6, 8-11, 13-15, and 17-23 fall within one of the four statutory categories of invention.
Independent claims 1, 14, and 20 recite the limitations: electronically storing data; receive as input from a first user a first data associated with one or more usable spaces available for purchase or rent from a first user, the data including (i) a geographic location of the one or more usable spaces, (ii) a time period of availability of the one or more usable spaces, and(iii) a physical size of the one or more usable spaces; electronically store the first data associated with the one or more usable spaces; receive as input a query from a second user regarding a desired geographic location of the one or more usable spaces available for purchase or rent; receive a selection from the second user of a desired usable space of the one or more usable spaces the selection including (i) a specific time period for use of the desired usable space, and (ii) the physical size associated with the desired usable space; receive confirmation of purchase or rent of the desired usable space; receive a partitioning input from the second user to partition the physical size of the desired usable space into two or more partitioned sizes, wherein each of the two or more partitioned sizes defines a physical dimension smaller than the physical size of the desired usable space; execute [a partitioning module] to electronically partition the desired usable space into the two or more partitioned sizes; display information representative of the two or more partitioned sizes; and receive a command to electronically list the two or more partitioned sizes of the desirable usable space as available for purchase or rent from the second user by one or more third parties. The claims are drawn to a system wherein usable space is rented and used, increasing the opportunity for filling available times for use of the space by individuals, and corresponds to certain methods of organizing human activities (managing personal interactions, relationships, or behaviors, business relations, commercial interactions), as evidenced by limitations detailing storing data; receive as input from a first user a first data associated with one or more usable spaces available for purchase or rent from a first user, the data including (i) a geographic location of the one or more usable spaces, (ii) a time period of availability of the one or more usable spaces, and (iii) a physical size of the one or more usable spaces; electronically store the first data associated with the one or more usable spaces; receive as input a query from a second user regarding a desired geographic location of the one or more usable spaces available for purchase or rent; receive a selection from the second user of a desired usable space of the one or more usable spaces the selection including (i) a specific time period for use of the desired usable space, and (ii) the physical size associated with the desired usable space; receive confirmation of purchase or rent of the desired usable space; receive a partitioning input from the second user to partition the physical size of the desired usable space into two or more partitioned sizes, wherein each of the two or more partitioned sizes defines a physical dimension smaller than the physical size of the desired usable space; execute [a partitioning module] to electronically partition the desired usable space into the two or more partitioned sizes; display information representative of the two or more partitioned sizes; and receive a command to electronically list the two or more partitioned sizes of the desirable usable space as available for purchase or rent from the second user by one or more third parties. The claims also correspond to mental processes (observation, evaluation, judgment, opinion), since the above-listed limitations also involves evaluating and observing data, and making a decision (judgment or opinion) as a result of the observed and evaluated data. The claims recite an abstract idea.
Note: the features or elements in brackets in the above Step 2A Prong One section is/are inserted for reading clarity, but are analyzed as “additional elements” under Step 2A Prong Two and Step 2B below.
The judicial exception is not integrated into a practical application simply because the claims recite the additional elements of: a database, a processing device, electronically storing data, a first and second graphical user device, and a non-transitory computer readable medium (claim 20). The additional elements are computer components recited at a high-level of generality performing the above-mentioned limitations. The combination of the additional elements are no more than mere instructions to apply the judicial exception using a generic computer. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer. Mere instructions to apply an exception using a generic computer cannot provide an inventive concept. Thus, when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea. The claims are not patent eligible.
Dependent claim 10 recites the limitation that the at least one modification includes positioning of goals on an ice rink or a field, positioning of cones on the ice rink or the field, or resurfacing ice of the ice rink. The claim limitation is further directed to the abstract idea analyzed above. The claim also recites the additional elements of goals on an ice rink or a field, positioning of cones on the ice rink or the field, or resurfacing ice of the ice rink. The additional elements amount to generally linking the judicial exception to a particular field of use. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Further, when viewed as an ordered combination, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. The claim is not patent eligible.
Dependent claims 2-6, 8, 9, 11, 13, 15, 17-19, and 21-23 recite additional limitations that are further directed to the abstract idea analyzed in the rejected claims above. Thus, 2-6, 8, 9, 11, 13, 15, 17-19, and 21-23 are also rejected under 35 U.S.C. 101.
Allowable Subject Matter
Claims 1-6, 8-11, 13-15, and 17-23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
The closest patent or patent application prior art reference(s) found that is/are relevant to the applicant’s invention includes Johnson (2015/0379435), Arumugam (2022/0269999), and Petroulas (2020/0334586). Johnson discloses a system that allows for monetization of unused spaces, goods, and services that would otherwise remain unused and not bring in capital, by letting additional renters use unoccupied space. Arumugam discloses a system for renting excess storage space provides an online platform for a storage space owner to rent out extra storage space to a renter. storage space renter inputs one or more storage space parameters. The renter inputs one or more storage item parameters. An algorithm calculates the parameters from both parties to determine the appropriate location, storage space dimensions, and final price for the storage space. Based on the calculation, the storage space owner and the renter are matched, and allowed to communicate for transacting the rental agreement. Petroulas discloses a system for optimizing and allocating bookings within a venue having one or more spaces and allows portions of the space to be rented out to other tenants in addition to the initial renter or requester. Neither reference individually nor in combination, discloses the amended limitation(s) of receiving a partitioning input from the second user via the second graphical user device to partition the physical size of the desired usable space into two or more partitioned sizes, wherein each of the two or more partitioned sizes defines a physical dimension smaller than the physical size of the desired usable space; execute a partitioning module to electronically partition the desired usable space into the two or more partitioned sizes; display information representative of the two or more partitioned sizes on the second graphical user device; and receive a command from the second graphical user device to electronically list the two or more partitioned sizes of the desirable usable space as available for purchase or rent from the second user by one or more third parties. The claims overcome the prior art.
The closest non-patent literature prior art reference(s) found that is/are relevant to the applicant invention includes the publication “How To Handle A Tenant Who Wants to Sublet” (Mashvisor, 2022) which discloses a similar concept to the applicant’s invention that allows for tenants to further sublet or lease their rented space to another third-party. The invention does not explicitly disclose the amended limitations of receiving a partitioning input from the second user via the second graphical user device to partition the physical size of the desired usable space into two or more partitioned sizes, wherein each of the two or more partitioned sizes defines a physical dimension smaller than the physical size of the desired usable space; execute a partitioning module to electronically partition the desired usable space into the two or more partitioned sizes; display information representative of the two or more partitioned sizes on the second graphical user device; and receive a command from the second graphical user device to electronically list the two or more partitioned sizes of the desirable usable space as available for purchase or rent from the second user by one or more third parties. The claims overcome the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONE N SIMPSON whose telephone number is (571)272-5513. The examiner can normally be reached M-F; 7:30 a.m.-4:30 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Resha Desai can be reached at 571-270-7792. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DIONE N. SIMPSON
Primary Examiner
Art Unit 3628
/DIONE N. SIMPSON/ Primary Examiner, Art Unit 3628